Appeal No. 2006-0258 Page 4
Application No. 09/755,747
From the foregoing, it is clear that the basis for the examiner’s rejection is
that the term “monolayer” does not appear in appellant’s specification. We note,
however, that it is not necessary for the specification to describe the claimed
invention ipsissimis verbis; all that is required is that it reasonably convey to
those skilled in the art that, as of the filing date sought, the inventor was in
possession of the claimed invention. Union Oil of California v. Atlantic Richfield
Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed. Cir. 2000); Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991);
In re Gosteli, 872 F.2d 1008,1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989);
In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978).
So the question before us is not whether appellant’s specification contains
the word “monolayer,” rather the question is whether a person of ordinary skill in
the art1 would have recognized from appellant’s specification that appellant was
in possession of a “monolayer of single DNA strands which are bound to a solid
surface,” as required by appellant’s claimed invention. The specification need
not always spell out every detail; only enough “to convince a person of skill in the
art that the inventor possessed the invention and to enable such a person to
make and use the invention without undue experimentation.” LizardTech Inc., v.
Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45,
76 USPQ2d 1724, 1732 (Fed. Cir. 2005).
1 We remind the examiner that written description is determined from the perspective of what the
specification conveys to one skilled in the art. In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d
1116, 1121 (Fed. Cir. 1995); Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563-64. 19 USPQ2d at
1117.
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